Vanguard
Trademark Holdings
Claim Number: FA1007001334841
Complainant is Vanguard
Trademark Holdings USA LLC (“Complainant”), represented by Renee Reuter, of Vanguard Trademark
Holdings USA LLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com>, registered with Communigal Communications Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2010.
On July 20, 2010, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names are registered with Communigal Communications Ltd and that Respondent is the current registrant of the names. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@natioanlcar.com, postmaster@nationalca.com, postmaster@nationlacar.com, postmaster@naionalcar.com, postmaster@natinoalcar.com, and postmaster@naitonalcar.com. Also on July 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names are confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names.
3. Respondent registered and used the <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NATIONAL CAR RENTAL mark (e.g., Reg. No. 1,540,913 issued May 23, 1989) in connection with automobile rental services.
Respondent, Bin / g Glu, registered the disputed domain names on January 6, 2004. The disputed domain names resolve to websites that consist primarily of links to Complainant’s website and sites that offer competing car rental services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in its NATIONAL CAR RENTAL mark
based on its holding of multiple trademark registration of the mark with the
USPTO (e.g., Reg. No. 1,540,913
issued May 23, 1989). The Panel finds
that Complainant’s registration of its NATIONAL CAR RENTAL mark with the USPTO
is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i) even though it is not registered in the
country where Respondent is located.
Complainant asserts that Respondent’s <natioanlcar.com>, <nationalca.com>, <nationlacar.com>,
<naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com>
domain names are confusingly similar to Complainant’s NATIONAL CAR RENTAL
mark. Respondent’s disputed domain names
all remove the spaces between the terms and the term “RENTAL” from
Complainant’s mark and also add the generic top-level domain (“gTLD”)
“.com.” The Panel finds that these
alterations do not sufficiently distinguish the disputed domain names from
Complainant’s mark. See
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts that it has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark for any purpose. The WHOIS information indicates that the registrant of the disputed domain names is “Bin / g Glu.” The Panel finds that Complainant’s assertions coupled with the WHOIS information is sufficient evidence for the Panel to conclude that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names were registered on January 6, 2004. The disputed domain names resolve to websites that consist primarily of links to Complainant’s website and sites that offer competing car rental services. Respondent presumably receives click-through fees from Internet users who access this site. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that Respondent’s registration and use of the <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names to operate a click-through website in competition with Complainant constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent’s use of the confusingly similar disputed domain names in order to intentionally attract Internet users to its websites by creating a strong likelihood of confusion with Complainant’s NATIONAL CAR RENTAL mark is further evidence of bad faith. The Panel presumes Respondent is profiting through the receipt of click-through fees from the competitive links published on the websites resolving from the disputed domain names. Therefore, the panel finds this use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natioanlcar.com>, <nationalca.com>, <nationlacar.com>, <naionalcar.com>, <natinoalcar.com>, and <naitonalcar.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 24, 2010
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